Interlocutory hearing to decide on a request by the registered proprietor to "strike out" the request for revocation.

Result

Request for "striking out": - Request refused.

Points Of Interest

1. The Hearing Officer concluded that the Agreement between the parties had been reached on the basis of their trading arrangements at that time and there was no evidence to say what could happen if one party ceased to use its marks.

2. In his decision dated 25 August 2005 (BL O/236/05) the Appointed Person upheld the Hearing Officer’s decision but disagreed with his reasoning. In particular he did not accept that the wording of Clause 5 necessarily constituted a restraint of trade. It would be necessary to study the factual and trading position of the two parties when the agreement between them was entered into.

Summary

As a result of an earlier opposition dispute the two parties to these proceedings entered into a co-existence agreement Clause 5 of which reads:-

Fenchurch (the applicant) agrees not to object to Ad Tech's (the registered proprietor) use and registration of the marks BACTI GUARD and BACTI GUARD and device for any medical product, device, equipment or application, including but not limited to those in Classes 1, 5 and 10, or as these Classes may change in the future.

Subsequently Fenchurch applied for revocation of the register on the grounds that Ad Tech had not used their mark for the five years prior to the application. Ad Tech applied for the application to be "struck out" essentially on the basis of the Agreement between the parties and particularly because of the wording of paragraph 5 set down above. Reference was also made to paragraph 1 which contains the wording "Ad Tech …. will not oppose or cancel other applications or registrations for the mark BACTIGUARD so long as the exclusion set down in paragraph 4 is included in the applications or registrations".

Both parties made extensive submissions to the Hearing Officer regarding the scope of the Agreement and how he should deal with the request for "striking out".

As a first step the Hearing Officer confirmed that on the basis of the 1994 Act and decided cases that he had the authority to "strike out", in the proceedings but he was not prepared to exercise that authority. In his view the Agreement between the parties did not debar the applicant from making an application for revocation on the grounds of non-use. In any event trade mark law in relation to potentially unused marks is absolutely clear. Trade marks should be used and if not used should be subject to revocation.

Proceedings were to take their normal course and the question of non-use to be decided on its merits.